Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is responsive to the claims filed 7/26/2024. Claims 1 – 27 are pending in this application.
Information Disclosure Statement
The information disclosure statement filed 5/30/2025 is acknowledged by the examiner.
Drawings
The drawings are objected to because figure 7 appears to be a manual sketch on a notepad and is not capable of reproduction. Figures 10A, 11A, 11B, 12, 14B, 18A, appear to be photographs and is not capable of reproduction. See MPEP 608.02(b) I.
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings are not reproducible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 , 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 4 and 17, one of the alternatives requires “a flowable material” comprising “a solid phase material”. It is not clear how a “solid phase material” can be a “flowable material”, as such claim 4 is rejected for failing to meet the written description requirement.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 14, 19 – 20 and 27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is not clear what the applicant means by the limitation “a restoring force component at the housing”. The term “at”, as per ordinary and customary usage of term, implies the restoring force component is in the vicinity of the housing. It is not clear where the restoring force component is located, none of figures disclose where the restoring force component is located in the vicinity of the housing to provide a force that opposes the movement of the actuator.
Regarding claims 6 and 19, it is not clear what applicant means by the limitation “at least partially allows or blocks the flowable material comprises a full blocking of the flowable material or a full closed valve position”. The valve cannot function to “partially allow flowable material” and “a full blocking of the flowable material” at the same time. Examiner, for this office action, is interpreting the limitation to mean “at least partially allows or fully blocks the flowable material comprises a full blocking of the flowable material or a full closed valve position”.
Regarding claims 7 and 20, it is not clear what the metes and bounds of the limitation “recover shape quickly” is.
Regarding claim 27, the phrase (e.g. ferromagnetic or permanent magnet) renders the claim indefinite because it is unclear whether ferromagnetic or permanent magnet is required.
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. See MPEP 2173.05(d).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes terms that are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “Restoring force” in claims 1, 7 – 8, 15, 20 & 27.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 12, 14, as far as they are definite, 15, 16 as far as it is definite, 17 – 18, 19 – 20 as far they are it is definite, 21 – 23, 25 – 26 and 27 as far as it is definite, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication to Peever (2022/0099214).
Regarding claim 1, as far as it is definite, Peever discloses a housing (30, Fig. 6) to direct a flowable material through the housing along a flow path within the housing; b. an on-board actuator (74, Fig. 6) of at least in part magnetic material, the actuator having freedom of movement along a range of motion (ROM) in the housing that at least either partially allows or blocks the flow path of flowable material in response to a first direction and magnitude of an off- board magnetic field that is effective to move the actuator along its ROM; and c. a restoring force component (80, Fig. 1) in the housing that opposes movement of the actuator caused by the first direction and magnitude of the off-board magnetic field; d. so that the magnetic actuator in the housing automatically follows changes in the off-board magnetic field to allow coordinated flow of the flowable material relative the flow path in response to changes in the off-board magnetic field.
Regarding claim 2, as far as it is definite, Peever discloses the housing comprises a valve body with a valve seat (58, Fig. 6) and the actuator comprises a valve plug (78, Fig. 6) that seats in the valve seat.
Regarding claim 3, as far as it is definite, Peever discloses the housing (30, Fig. 6) comprises substantially magnetically non-responsive material – plastic [para. 23] - to allow passage of the off- board magnetic field.
Regarding claim 4, as far as it is definite, Peever discloses in the flowable material comprises: a gaseous phase material [para. 22].
Regarding claim 5, as far as it is definite, Peever discloses the actuator comprises ferromagnetic (soft or hard) material [para. 29].
Regarding claim 6, as far as it is definite, Peever discloses the ROM and direction and magnitude of the off-board magnetic field that at least partially allows or blocks the flowable material full blocking of the flowable material in a full closed valve position [para. 31].
Regarding claim 7, as far as it is definite, Peever discloses a spring (80, Fig. 6) that capable of recovering its original shape after deformation, chosen for their property [para. 32] and are aligned to the flow directional force.
Regarding claim 8, as far as it is definite, Peever discloses a valve member (74, Fig. 6) is in the vertical direction and inherently discloses the restoring force includes gravity.
Regarding claim 9, as far as it is definite, Peever discloses a dedicated to valve operation.
Regarding claim 10, as far as it is definite, examiner is interpreting the closed position of the valve disclosed by Peever as lower magnetic field and open position as high magnetic field.
Regarding claim 11, as far as it is definite, Peever discloses a normally closed valve.
Regarding claim 12, as far as it is definite, Peever inherently discloses a source of off-board magnetic field (by element 50, Fig. 6); and a source of flowable material.
Regarding claim 14, as far as it is definite, Peever discloses a mechanism and source of off-board magnetic field comprises a valve assembly where the off-board magnetic field is controlled by a signal from a control location remote from the valve assembly (Fig. 1).
Regarding claim 15, Peever discloses interposing an automatic magnetic valve comprising a magnetic actuator (74, Fig. 6) moveable in a valve body relative to a flow path for the flowable material through the valve body without any electrical power source; b. selecting operating state of the valve to normally-closed by configuration of the restoring force component relative to the magnetic actuator; c. positioning the valve relative to an off-board magnetic field (50, Fig. 6) to effectively take advantage of a direction and magnitude of the off-board magnetic field; and d. operatively connecting and controlling a flow of the flowable material through the valve body with the off-board magnetic field.
Regarding claim 16, as far as it is definite, Peever inherently discloses the automatic magnetic valve comprises of one or more of the automatic valve variations of claims 1-14
Regarding claim 17, Peever discloses in the flowable material comprises: a gaseous phase material [para. 22].
Regarding claim 18, Peever discloses the actuator comprises ferromagnetic (soft or hard) material [para. 29].
Regarding claim 19, as far as it is definite, Peever discloses the ROM and direction and magnitude of the off-board magnetic field that at least partially allows or blocks the flowable material full blocking of the flowable material in a full closed valve position [para. 31].
Regarding claim 20, as far as it is definite, Peever discloses a spring (80, Fig. 6) that capable of recovering its original shape after deformation, chosen for their property [para. 32] and are aligned to the flow directional force.
Regarding claim 21, Peever discloses a dedicated to valve operation.
Regarding claim 22, examiner is interpreting the closed position of the valve disclosed by Peever as lower magnetic field and open position as high magnetic field.
Regarding claim 23, Peever discloses a normally closed valve.
Regarding claim 25, Peever discloses a mechanism and source of off-board magnetic field comprises a valve assembly where the off-board magnetic field is controlled by a signal from a control location remote from the valve assembly (Fig. 1).
Regarding claim 26, Peever discloses a system of controlling flow of a flowable material comprising: a. an off-board magnetic field subsystem comprising: i. a source of variable magnetic field generating a magnetic force (34, Fig. 6); and b. an automatic magnetic valving subsystem comprising: i. an automatic magnetic valve positioned in effective proximity to the off-board source of the variable magnetic field along a flow path (55, 56, Fig. 6); ii. in operative communication with a source of a flowable material along a flow path wherein the automatic magnetic valve (70, Fig. 6) is positioned relative to the off-board magnetic field to effectively take advantage of the direction and magnitude of the off-board magnetic field to control flow of the flowable material.
Regarding claim 27, as far as it is definite, Peever discloses a valve body (30, Fig. 6) having a flow path (55, 56, Fig. 6) for the flowable material between first and second ports and that is at least substantially magnetically non-responsive to the magnetic force; b. an actuator member of magnetic (70, Fig. 6) material having freedom of movement (FOV) along a constrained range of motion (ROM) inside the valve body (30, Fig. 6) between a flow blocking position and a flow allowing position relative the flow path; and c. a restoring force component (80, Fig. 6) having a restoring force that constantly urges the actuator member (70, Fig. 1) to the flow blocking position, wherein the magnetic force at the actuator member is greater than restoring force plus of fluid flow force; d. so that in response to effective proximity and orientation of the valve body to an off-board variable magnetic field dedicated to operation of the valve, the actuator member (70, Fig. 6) automatically and passively moves to flow allowing position by overcoming restoring force plus of fluid flow force.
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent to Haddad (10,711,901) and US Patent to Ishikawa et al. (11,041,575) both disclosing magnetically actuated valves.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisors Craig Schneider can be reached at (571) 272-3607 or Ken Rinehart can be reached at (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753